WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société Air France v. Mark Allaye-Chan

Case No. D2009-0327

1. The Parties

The Complainant is Société Air France of Roissy, France, represented by Meyer & Partenaires, France.

The Respondent is Mark Allaye-Chan of Ottawa, Canada, represented by Ed Chow, China.

2. The Domain Name and Registrar

The disputed domain name <airfrance-suck.com> is registered with 1 & 1 Internet AG.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2009. On March 12, 2009, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On March 17, 2009, 1&1 Internet AG transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 20, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 23, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2009. The Response was filed with the Center on April 14, 2009.

The Center appointed John Swinson as the sole panelist in this matter on April 30, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant officially commenced operations in France in 1933, and was listed on the Paris Stock Exchange in 1999. The Complainant operates an air transport business (involving passenger transport, cargo transport and maintenance services), and is France's national airline. The Complainant's aircraft fly to over 180 destinations in 98 countries.

The Complainant has registered trade marks around the world for the word mark AIR FRANCE. See for example, Community Trade Mark No. 004422481 registered from August 7, 2006; Australian Trade Mark Registration No. 1014133 registered from October 20, 2003; and United States Trade Mark Registration No. 2905497 registered from November 30, 2004.

The Complainant operates its primary website at “www.airfrance.com”, and also operates country-specific websites at other domains, such as “www.airfrance.com.au” (Australia), “www.airfrance.us” (United States) and “www.airfrance.ca” (Canada).

When attempting to access the website operating from the disputed domain name, the Panel received the following message:

Error 403 – Forbidden

You tried to access a document for which you don't have privileges.

The Panel therefore understands that the website has been taken down by the Respondent.

5. Parties' Contentions

A. Complainant

The Complainant makes the following contentions:

The Complainant is one of the world's major airline companies, with origins dating back to 1933. The Complainant operates a website at “www.airfrance.com”, and also owns many other country code top level domain names which consist of or incorporate the words AIR FRANCE.

Société AIR FRANCE is the trade name of the Complainant, and this name has been used in commerce since 1933. The Complainant is also the registered owner of a large number of AIR FRANCE trade marks around the world, such as in France and the United States of America. See for example, French Trade Mark No. 1,703,113 for AIR FRANCE, registered on October 31, 1991 and United States Trade mark No. 610,072.

The Complainant's AIR FRANCE trade mark is well and widely known throughout the world. This has been recognised in previous UDRP cases.

The disputed domain name is confusingly similar to the Complainant's AIR FRANCE trade mark. The trade mark is entirely reproduced in the disputed domain name. The absence of a space should be ignored for this purpose. The combination of the Complainant's trade mark with the word “suck” does not eliminate the risk of confusion, as AIR FRANCE is the only distinctive element of the disputed domain name.

The addition of a generic or descriptive term to an otherwise distinctive or well known trade mark does not distinguish the disputed domain name from the trade mark. Further, SUCK is a negative word use to indicate criticism. In the majority of “sucks” cases before the UDRP, panels have concluded that the disputed domain names were confusingly similar with the complainant's trade mark.

Even if some Internet users treat the addition of “suck” as a pejorative term and dissociate it from the Complainant, not all Internet users are English speaking. Importantly, the Complainant is the national airline of France, and accordingly other Internet users will not give the domain name any definite meaning, and will be confused regarding the association with the Complainant.

Even Internet users who do understand the meaning of “suck” may still remain confused regarding the similarity of the disputed domain name with the Complainant's well known trade mark. A user may think that the Complainant registered the disputed domain name for marketing purposes (in a self-derision strategy). This type of communication policy has been used by other large companies, to attract younger or disaffected consumers.

The Complainant is not opposed to free speech. However this is not a case of cybergriping. The disputed domain name is resolving to a Google search engine website, so there does not appear to be any criticism of the AIR FRANCE brand.

The Respondent is not in anyway related to the Complainant's business, and is not an agent of the Complainant. The Respondent is not currently known and has never been known as AIR FRANCE, or any combination of this trade mark with the term “suck”. The Complainant has not granted any license or authorization to the Respondent to make any use, or apply for registration of the disputed domain name. Accordingly the Respondent has no rights or legitimate interests in the disputed domain name.

The disputed domain name has been registered to disrupt the Complainant's online presence in the top level domain field. By resolving to a Google search engine, the Respondent invites potential customers to search for other online services. As mentioned above, the disputed domain name does not constitute use for purpose of criticism of the brand, or to protest the business practices of the Complainant.

It is hard to imagine that the Respondent ignored the well known AIR FRANCE trade mark at the time of registration. There is a strong reputation in AIR FRANCE throughout the world, and this has existed for a long period of time. Notoriety of this trade mark creates a prima facie presumption that the Respondent registered the disputed domain name for the purpose of selling it to the Complainant, or to attract users to the website for commercial gain. The Respondent could not have ignored the Complainant's international reputation at the time of registration (January 5, 2009).

The fact that the disputed domain name contains a famous trade mark with the word “suck” also shows bad faith registration. The word “suck” only has an interest in focusing attention on the AIR FRANCE trade mark. There is no doubt that the Respondent wanted to refer to the Complainant.

The disputed domain name has been registered primarily for the purpose of inciting the Complainant to purchase it from the Respondent for consideration in excess of out of pocket costs. This is inferred from the lack of genuine use of the disputed domain name.

The Respondent uses the disputed domain name to redirect Internet users to a Google search engine homepage. The active or passive nature of this holding, indicates bad faith, in combination with other factors. The Google search engine homepage displays no information related to the Complainant, and cannot be considered as a form of legitimate criticism. Rather, it appears as a denigration of the Complainant's well known trade mark. Internet users may also use this website to search for competitors of the Complainant.

The activation of the disputed domain name has not changed from the time it was registered. This shows the Respondent not only registered the disputed domain name to generate benefit by offering it for sale, but that the Respondent is still waiting for the Complainant to offer to purchase it.

The Respondent has also hidden behind a privacy protection service. This clearly demonstrates an active step taken to conceal the Respondent's real identity. This also constitutes bad faith.

B. Respondent

The Respondent makes the following contentions:

Edmond Chow is the real Respondent. Mr. Chow is a friend of the named Respondent (Mark Allaye-Chan). Mr. Chow used his friend's account to register the disputed domain name, however Mr. Allaye-Chan had no knowledge of the exact domain name Mr. Chow was registering. Mr. Allaye-Chan intends to transfer the disputed domain name to Mr. Chow (should he be successful in these proceedings).

Mr. Chow registered the disputed domain name with the intention of publishing evidence of an incident he had with the Complainant, where his luggage was lost and he was not offered compensation (despite the Complainant agreeing to this verbally at the airport). Mr. Chow complained directly to the Complainant but was not satisfied with the action taken. This led to the idea of obtaining a domain name where he could detail his experience with the Complainant together with evidence of their irresponsibility and arrogance. Mr. Chow had no interest to use the disputed domain name for any commercial purpose, and still doesn't.

The disputed domain name is registered under a particular account, together with several other domain names. That account has set up an automatic redirection to Google.com, which was in place years before the registration of the disputed domain name. The reason for the setup was that Google provides fast response time to load a page, and most users would find it useful if they ever ended up at any of the domains owned by Mr. Allaye-Chan. The redirection was removed after receipt of the Complaint, and this has affected all domain names registered under the same account.

The Complainant has failed to explain how the redirection to Google from the disputed domain name could have caused any damage to the Complainant. There is a domain name called <airfrancecomplaints.com>, which redirects to <airlinecomplaints.org>. There is a much higher chance for a consumer to confuse <airfrancecomplaints.com> with a legitimate website of the Complainant related to customer service, when compared to the disputed domain name.

If someone says “Air France suck” that does not infringe a trade mark. The disputed domain name is merely an equivalent statement in written form.

The Complainant's argument that the disputed domain name would confuse non-English speaking consumers assumes that:

- any domain name containing the term “air france” is infringing, except where protected by the right to free speech;

- non-English speakers would be more easily misled into believing that the disputed domain name is a legitimate website of the Complainant, because they wouldn't know the meaning of the word “suck”. However, English speaking people would be given a strong hint that the disputed domain name does not relate to a website belonging to the Complainant.

French people would fail to comprehend the meaning of the verbal statement “air france suck”. They must be provided with more information (such as translation). Similarly, if a non-English speaker visited the disputed domain name, they would need more information to decide what the website is about, even if they did identify AIR FRANCE from the disputed domain name. It would be their subsequent interaction with the website which would assist in determining whether the website belongs to the Complainant. A website with a bland error message or a redirect to Google.com would give enough hints that there was nothing about the Complainant available from this website.

It is not clear what measures and criteria are used to reliably judge the number of non-English speaking online users who may genuinely get confused by the disputed domain name, to the detriment of the Complainant. The disputed domain name is certainly registered for griping and its ownership must be protected from harassment or interference.

Mr. Chow has a legitimate non-commercial and fair use of the disputed domain name, without any intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark at issue.

6. Supplemental Filings

On April 17, 2009, the Complainant filed a Supplemental Filing addressing the Respondent's Response. On April 20, 2009, the Respondent also filed a Supplemental Filing, to clarify their Response and to respond to the Complainant's Supplemental Filing.

As each party had the opportunity to submit additional filings, and each Supplemental Filing was relatively brief, the Panel has decided to consider them.

From the Response, the Complainant infers that even if it was Mr. Chow that registered the disputed domain name, it was done in the name of Mr. Allaye-Chan, who must have provided Mr. Chow access to his domain name registration account. The Policy is directed towards the Respondent being the domain name holder - so even if Mr. Chow physically registered the domain name, it is currently registered in the name of Mr. Allaye-Chan, who is the sole present holder of the domain name. Accordingly, Mr. Chow's arguments should not be considered. The Complainant also notes that both activations of the disputed domain name have not contained any content corresponding to the luggage complaint. Even if Mr. Allaye-Chan has allowed Mr. Chow to deal with the activation of the disputed domain name, the Respondent remains fully responsible. Mr. Chow's actions are suspicious if he wished to operate a website detailing his personal experience, why did he use elaborate measures to conceal his identity (use of a privacy service and a friend's domain name account). The Respondent's Response demonstrates bad faith.

The Respondent's Supplemental Filing states that Mr. Allaye-Chan was not aware of registration and intended use of the disputed domain name at the time of registration. Mr. Allaye-Chan paid for and held a domain name for Mr. Chow out of friendship, to support Mr. Chow's interest in the domain name and to represent Mr. Chow's interests. Mr. Allaye-Chan therefore has rights and legitimate interests in the disputed domain name. Just because the disputed domain name has not acted as a functional website for a few months does not automatically exclude any rights or legitimate interests. Mr. Chow is a registered professional engineer and website construction has been on his to do list since the day of registration. It has been delayed by his busy schedule and uncertainty whether he should build the website himself or engage others to help. The Complainant has also grossly mischaracterized the way in which Mr. Chow has maintained his privacy. The registrar of the disputed domain name provides free privacy protection as part of its services, and Mr. Allaye-Chan has always accepted this privacy protection so Mr. Chow chose the same (as this setting has always been in place).

The Panel appreciates from the case record before it, that Mr. Chow is the person who controls the website, and who would be the true respondent, were it not for the fact that Mr. Allaye-Chan is registered as the domain name owner. The Panel will treat Mr. Chow as the Respondent's representative.

7. Discussion and Findings

In order to succeed on its claim, the Complainant must show that all the elements set out in paragraph 4(a) of the Policy have been satisfied. The burden of proof is on the Complainant to show:

(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in the disputed domain names; and

(iii) the disputed domain names have been registered and used by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Complainant has registered the AIR FRANCE word trade mark in many countries around the world, including in France, the European Union, and the United States. The Complainant clearly has registered trade mark rights in AIR FRANCE.

The disputed domain name contains the Complainant's entire trade mark. However, it also contains the suffix “-suck”. The disputed domain name therefore falls within the category of so-called “sucks” cases (where a trade mark is joined with a negative term).

Previous panels who encounter “sucks” cases have found that a domain names can be confusingly similar to the trade mark for various reasons, including because the disputed domain name is highly similar to the trade mark; or because the domain name may not be recognized as negative (for example, for non-English speaking Internet users). This view (that “sucks” domain names are confusingly similar to the trade mark) is the majority view of previous panels, and may even be the consensus view. See e.g., Sermo, Inc. v. CatalystMDLLC, WIPO Case No. D2008-0647, Footnote 5; Air Austral v. Tian Yi Tong Investment Ltd., WIPO Case No. D2009-0020. It is in any event the Panel's preferred view in these circumstances, particularly because the Complainant originated in France, and may have a significant number of non-English speaking customers who will not automatically recognize “suck” as a pejorative term.

As Internet users may not immediately recognize the disputed domain name as involving negative connotations, and because the “-suck” component (when added to the well known trade mark of AIR FRANCE) is not the most prominent or obvious feature of the name, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trade mark.

The Panel notes that this finding will not be fatal to the Respondent's case, if the Respondent is in fact operating a true protest site. If this is the case, the “legitimate interest” and “bad faith” elements of the Policy should afford adequate protection to the Respondent.

The first element has been established.

B. Rights or Legitimate Interests

The Respondent may establish rights or legitimate interests by demonstrating any of the elements in Paragraph 4(c) of the Policy including:

(iii) the Respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The Respondent relies solely on this paragraph to establish rights or legitimate interests. However, any evidence which demonstrates the Respondent's (or Mr. Chow's) intention to create a criticism site, is severely lacking.

Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279, sets out four elements which should be met to succeed under this limb:

1. The Respondent's use must be legitimate noncommercial or fair use

2. The use must be without intent for comment gain

3. The use must be without intent to misleadingly divert consumers; and

4. The use must be without intent to tarnish the trade mark of the complainant.

While the Response states that the disputed domain name was registered for the purpose of a legitimate protest site, there is no evidence to support this proposition. The Respondent has not provided evidence before the Panel of any demonstrable steps it has taken to launch a website at the disputed domain name, related to his grievance with the Complainant. At the time of writing this decision, the website was not operational.

Admittedly the disputed domain name has only been registered for a short time (since January 5, 2009) and it may be that the Respondent has not had sufficient time to launch his protest site. However, the website has previously resolved to a Google search engine (which allows for the possibility of commercial gain), and therefore the Panel cannot see how the Respondent satisfies the four requirements set out in Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279.

Further, the wording of paragraph 4(c)(iii) requires the Respondent to be “making” a legitimate non-commercial or fair use of the disputed domain name. As there is currently no functional website operating from the disputed domain name, the Respondent is not making any use of the domain name that the Panel can see, and the Respondent therefore is unable to fall within this category.

The Respondent has failed to establish that it has rights or legitimate interests under paragraph 4(c) of the Policy, by reason of a legitimate criticism site or otherwise.

Accordingly, the second element has been established.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy enumerates four, non-inclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. One of those circumstances (subparagraph (iv)) is that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website.

As mentioned above, while the website may not currently be active, it previously resolved to a Google search engine, which indicates that at some stage, the disputed domain name was used for commercial gain. While there may be some other intended purpose for the disputed domain name, no clear evidence was put forward by the Respondent of such use.

The Panel has already found that the disputed domain name contains the Complainant's well known trade mark. See e.g.Societé Air France v. MSA, Inc., WIPO Case No. D2007-0143. It is clear from the Response that the Respondent (or Mr. Chow) was aware of the Complainant's trade mark at the time of registering the disputed domain name. By incorporating the Complainant's trade mark in its entirety in the disputed domain name, the Respondent deliberately chose a domain name which was likely to be confused with the Complainant's trade mark and own domain name. The Panel infers that this name was chosen to generate Internet traffic to its website, by creating a likelihood of confusion with the Complainant's marks.

The Panel is also able to draw inferences of bad faith from Mr. Chow's actions in hiding firstly behind the Respondent, and also behind a privacy service. While Mr. Chow contends that adverse inferences cannot be drawn from these circumstances, the Panel does not agree. Mr. Chow could have easily set up his own domain name account, and registered the disputed domain name in his own name. He did not provide any persuasive reasons as to why he used his friend's account to register the name.

The Complainant has also asserted that the Respondent's purpose in registering the disputed domain name must have been to elicit an offer from the Complainant to acquire the disputed domain name for valuable consideration far in excess of out of pocket expenses. However, as there is no evidence before the Panel that the Respondent has attempted to sell the disputed domain name to the Complainant, this allegation has not been substantiated and cannot be used to demonstrate bad faith.

The third element has been met based on the information of this case.

8. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <airfrance-suck.com> be transferred to the Complainant.